Thursday, 27 July 2017

Well-Known Marks in the Andean Community of Nations

Well-known trade marks have special protection under the IP regime of the Andean Community of Nations (CAN). Its evolution, as explained by Francisco Villacreses, can be observed through history. Initially, well-known trade marks partially exceeded the principle of speciality in the Decision 85/1974, by the prohibition to grant a register to a similar sign than a well-known trade mark even if belonging to a different class of the Nice Classification. Decisions 313/1992 and 344/1993 added international protection within CAN members and in those countries conceding similar protection. Finally, well-known marks as recognised by the Decision 486/2000 are supported on both the TRIPS Agreement and the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks of 1999.

Hence, nowadays, as explained by the Andean Tribunal of Justice (ATJ), the protection of this kind of marks are beyond the basic principles of speciality, territoriality, and real and effective use of a sign. Consequently, a register identical or similar to a well-known mark cannot be achieved: i) in any class; ii) in any CAN Member State, even if it has not been registered in the country where the new register has been filled; and, iii) a well-known mark will not be cancelled due to its lack of use (the cancellation of a mark is a step in the process of acquiring a sign that is not being used). This last aspect has been established to avoid that one party takes advantage of another’s reputation.

The use of personal names is another aspect of their protection. Overall, any person has the right to register their name, pseudonym, signature, caricature, or portrait as a trade mark. If such a sign is sufficiently distinctive and does not generate confusion or the risk of confusion in the consuming public, even when another similar trade mark has already been conceded for the same class. Nevertheless, the ATJ stated some limitations to this right: i) the unduly affectation of the rights of third parties; ii) the affectation of the identity or prestige of natural or legal persons; and, iii) that this kind of trade marks can only be granted to the person whose name is the sign.

However, well-known trade marks constitute another limitation to the use of personal names. On this matter, the Colombian Superintendence of Industry and Commerce (SIC) recently refused the registration of the mark ‘Andrés Parrilla’ (class 43), requested by Andrés Martínez Zapata to identify his steak house. This decision was taken because of the trade mark ‘Andrés Carne de Res’, registered previously for the same category, was acknowledged as a well-known mark while the other mark was in the process of registration. The brands clearly are distinguishable enough to avoid confusion in the consumer public. Nonetheless, the application of the mark ‘Andrés Parrilla’ was denied invoking the status of well-known mark of ‘Andrés Carne de Res.’

Despite the extensive protection of well-known marks, the practice has shown some exceptions to these rules. One case is the register of the sign ‘Babaria’ in class 3 to the Spanish Company Berioska S.L. by the Colombian Superintendencia de Industria y Comercio (SIC). Bavaria has been recognised as a well-known mark in Colombia. It is a Colombian brewery company founded in 1889 with dozens of trade marks registered to identify its products, most of which include the word ‘Bavaria.’ The concession of a sign using a word that sounds the same (in Latin-American Spanish "b" and "v" are pronounced the same way) has been a huge controversy.

It is worth to mention that the ATJ explained in its preliminary interpretation of this case that a well-known trade mark could be cancelled for lack of use, and subsequently been conceded to a different person if ‘this meets the function and effect to clear the register of marks and to make the right of preference possible’ (own translation). Maybe we are here in front of a shift in the case law referred to the scope and exercise of the well-known mark rights.